Overton Enterprises, LLC v. Leslie Balliette
Claim Number: FA1110001413576
Complainant is Overton Enterprises, LLC (“Complainant”), represented by Stewart Mesher, Texas, USA. Respondent is Leslie Balliette (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spibelt.net>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James Bridgeman as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2011; the National Arbitration Forum received payment on October 31, 2011.
On October 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <spibelt.net> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy” or the “UDRP Policy”).
On November 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 21, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@spibelt.net. Also on November 1, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 7, 2011.
On November 15, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James Bridgeman as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the SPIBELT and SPIBELT SMALL PERSONAL ITEM BELT marks and relies on the trademark registrations listed below and the goodwill that it has established by its use of the marks in commerce, citing American Express Marketing & Development Corp. v. alexanderwechsler, FA1107001399523 (Nat. Arb. Forum Aug. 23, 2011) (finding that the complainant had established rights to the CENTURION mark under Policy ¶ 4(a)(i) by registering it with several governmental trademark authorities); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant, submits that it is engaged in the business of selling belts and small personal item holders such as running belts, reflective belts, belts with pouches for storing small personal items, water bottle holders, fanny packs, and related goods and services such as T-shirts. Complainant claims to be one of the world’s largest providers of such items in its market niche and is listed as number 175 on the 2011 Inc. 500 list of fastest growing companies.
Complainant claims to have acquired both a nationwide and a worldwide reputation for quality goods and services, and has accumulated substantial public goodwill. Complainant claims to have acquired extensive rights in numerous trade names, trademarks and service marks in the course of its business. Complainant asserts that it advertises, promotes and sells its goods and services directly to the ultimate consumer as well as through distribution channels at events such as running competitions and marathons. Complainants states that its products are also found in retail channels at sporting goods stores, general merchandising outlets, and online. The methods of advertising, promoting and sales are many, including on the Internet. In particular, Complainant has continuously used the mark SPIBELT, or a form thereof, since at least as early as March 31, 2007.
Complainant claims that it has adopted and developed substantial rights and goodwill in an entire family of trademarks and service marks identifying Complainant’s goods and services, including the marks SPIBELT and SPIBELT SMALL PERSONAL ITEM BELT. Complainant’s website is found at its website to which its domain name <spibelt.com> resolves.
Complainant argues that because SPIBELT is a well-known mark affiliated with Complainant, and has been in continuous use throughout the United States since 2007, SPIBELT is accepted by the purchasing public as distinguishing Complainant’s goods and services from the goods and services of others. Complainant submits that it has devoted efforts to advertise and promote its goods and services under the SPIBELT mark and has developed recognition in the marketplace for the services offered under the mark. The SPIBELT mark is accepted by the purchasing public as distinguishing Complainant’s goods and services from the goods and services of others. Complainant has acquired and now enjoys substantial goodwill and a valuable reputation through its SPIBELT mark.
Complainant argues that the disputed domain name <spibelt.net> is confusingly similar to Complainant’s registered SPIBELT mark because the domain name incorporates the mark in its entirety and merely adds the generic top-level domain “.net”. Thus, the dominant portion of the disputed domain name is essentially identical to the Complainant’s mark SPIBELT, and the minor alteration fails to sufficiently distinguish Respondent’s domain name from Complainant’s mark or to detract from the overall commercial impression provided by the SPIBELT mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
Complainant further argues that Respondent’s registration and use of the disputed domain name <spibelt.net>, which is confusingly similar to the registered SPIBELT mark owned by Complainant, is misleading and causes confusion to consumers who are diverted away from Complainant’s web site at <spibelt.com> where Internet users can purchase goods and services from Complainant.
Complainant submits that upon information and belief, Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services.
When an Internet user types in the disputed domain name <spibelt.net> the domain name resolves to a web site that displays the goods and services of a competitor. In this regard Complainant has furnished a print out of the website to which the disputed domain name resolves in an annex to the Complaint.
Complainant submits that Respondent is clearly using the disputed domain names as an opportunistic attempt to attract Complainant’s customers to Respondent’s web site by creating a likelihood of confusion with Complainant. Complainant further submits that Respondent’s use of the disputed domain name that is confusingly similar to Complainant’s SPIBELT marks for the purpose of diverting Internet users to Respondent’s site for its own commercial gain is neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain name. See Tahoe Joe’s, Inc. v. Manila Industries, Inc., FA 721976 (Nat. Arb. Forum July 14, 2006); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s marks to divert Internet users to a web site displaying a series of links, some of which linked to web sites of the Complainant’s competitors); see also Bank of America Corporation v. Stop2Shop Inc., FA 400913 (Nat. Arb. Forum Feb. 25, 2005) (finding that Respondent had no rights or legitimate interests in a disputed domain name that was an obvious misspelling of Complainant’s mark intended to capitalize on frequent Internet user mistake).
Complainant submits that no available evidence suggests that Respondent has ever been commonly known by the disputed domain name. Complainant submits that the disputed domain name is not the nickname of Respondent or in any other way identified with or related to a legitimate interest of Respondent.
Moreover, Complainant complains that Respondent’s unfair and illegitimate commercial use of the domain name <spibelt.net> tarnishes the SPIBELT mark which has become associated with the well known and high quality offerings of Complainant.
Complainant asserts that it did not license or otherwise permit Respondent to use any of Complainant’s marks or to apply for or use any domain name incorporating any of Complainant’s marks, including Complainant’s SPIBELT mark.
Complainant argues that Respondent could not have legitimately chosen the domain name <spibelt.net> , and its decision to register this domain name indicates that it intentionally intended to create an association with Complainant when no such association exists. Thus, Respondent has no rights or legitimate interest in the disputed domain name <spibelt.net>, which is confusingly similar to Complainant’s SPIBELT mark. Complainant argues that it logically follows that, given the manner in which the SPIBELT mark is used, to resolve to a website that offers competing goods, Respondent’s only rationale for registering the disputed domain name <spibelt.net> was primarily for the purpose of disrupting the business of Complainant and to capitalize and trade on the goodwill of the SPIBELT mark and domain name.
Complainant submits that it follows that the evidence shows a bad faith attempt to reap a windfall off the Complainant’s intellectual property. Because there is no home page to which the disputed domain name <spibelt.net> resolves, a logical inference is that Respondent receives click-through fees or other consideration from the competitor of the Complainant or, in the alternative, that Respondent’s actions are controlled by the competitor of the Complainant. In either event, the factors support a conclusion that Respondent registered the domain name <spibelt.net> for the primary purpose of intentionally attempting to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of said web site or of a product or service on said web site, which is evidence of bad faith. See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Grounded Nomads, LLC d/b/a Vocation Vacations v. Tex. Int’l Prop. Assocs., FA 999659 (Nat. Arb. Forum Aug. 1, 2007) ("Respondent is benefiting from the likelihood of confusion between Complainant's mark and Respondent's disputed domain name for commercial gain, and has therefore demonstrated bad faith registration and use under Policy ¶ 4(b)(iv).”).
Complainant submits that upon information and belief, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the SPIBELT mark and the registration of the domain name that is confusingly similar to Complainant’s SPIBELT mark, with knowledge of Complainant’s rights in the mark, is evidence of bad faith registration and use in violation of ICANN Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum April 17, 2000) (finding that actual or constructive knowledge of a commonly known mark at the time of registration evidences bad faith). The registration and use by Respondent of the domain name at issue also clearly disrupts the Complainant’s business by diverting Internet traffic away from Complainant’s web site at <spibelt.com>.
Complainant submits that the competitor may have also shielded its true identity from the public by identifying itself as Respondent “Leslie Balliette” in the WHOIS information as the registrant of the <spibelt.net> domain name. If that is the case, then the attempt to hide the true identity of the real party in interest is further evidence that the domain name has been registered and is being used in bad faith. See Medco Health Solutions, Inc. v. Whois Privacy Protection Serv., Inc., D2004-0453 (WIPO Aug. 25, 2004) (respondent’s efforts to disguise its true identity is an example of bad faith conduct); see also Marian Keyes v. Old Barn Studios Ltd., D2002-0687 (WIPO Sept. 23, 2002) (finding bad faith registration and use where “Respondent has tried to conceal the name of the true owner of the disputed domain name.”).
B. Respondent
The Respondent filed a Response, incorrectly stated to be filed in accordance with the usTLD Dispute Resolution Policy. For reason given below this Panel has admitted and accepted the Response.
The Respondent requests this Panel to deny the remedies sought by Complainant. The brief Response simply states that the domain name points to a website that does not use the name SPIBELT; the domain name spibelt.net was available for purchase by anyone at the time and was legally purchased; it violates no trademarks by pointing at a website that mentions no similarities with complainants products; Respondent bought the domain name with the intent to sell it. It is for sale for the sum of $5,000.00.
On the evidence submitted the Panel finds that Complainant owns several trademark registrations worldwide for the SPIBELT mark with the following governmental trademark authorities:
1. Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA 734,047 registered February 6, 2009);
2. European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. MP 954,557 registered February 6, 2008);
3. Japan Patent Office (“JPO”) (Reg. No. MP 954,557 registered February 6, 2008); and
4. Norwegian Industrial Property Office (“NIPO”) (Reg. No. 258,901 registered February 25, 2011).
Complainant also owns trademark holdings with governmental trademark agencies for the SPIBELT SMALL PERSONAL ITEM BELT mark as follows:
1. CIPO (Reg. No. TMA 792,677 registered March 11, 2011);
2. OHIM (Reg. No. MP 1,013,300 registered April 21, 2009);
3. JPO (Reg. No. MP 1,013,300 registered April 21, 2009); and with the
4. USPTO (Reg. No. 3,714,182 registered November 24, 2009).
Complainant has twelve (12) additional pending applications to register the mark SPIBELT with several governmental trademark authorities in various other countries as well as one (1) such additional pending application to register the mark SPIBELT SMALL PERSONAL ITEM BELT, all to be used in connection with belts and small personal item holders.
Complainant has an established Internet presence and maintains its website at <spibelt.com>.
Complainant first used the SPIBELT mark in commerce prior to March 31, 2007. Complainant’s <spibelt.com> domain name was created on December 13, 2006. The disputed domain name was registered on November 17, 2010.
The only information available to this Panel relating to the Respondent is that given in the WhoIs database, the Complaint and the brief Response.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The UDRP Policy governs the registration of the disputed domain name <spibelt.net>.
It is of particular procedural significance that the Response filed by Respondent does not refer to the UDRP Policy and instead is incorrectly stated to be filed in accordance with the usTLD Dispute Resolution Policy.
The Response states that, according to the notification of Complaint received by Respondent, Complainant had “submitted a Complaint for decision in accordance with the usTLD Dispute Resolution Policy (“usTLD Policy”) as adopted by the U.S. Department of Commerce (“DOC”) on February 21,2002, the Rules for the United States Domain Name Dispute Resolution Policy (“usTLD Rules”), and the National Arbitration Forum’s Supplemental Rules (“Supplemental Rules”). usTLD Rule 4.”
That is not correct, because the Complaint was expressly submitted “for decision in accordance with the Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999, and the Rules for Uniform Domain Name Dispute Resolution Policy (UDRP Rules), with an effective date of March 1, 2010, and the National Arbitration Forum (FORUM) Supplemental Rules (Supp. Rules). UDRP Rule 3(b)(i).”
The Response as filed addresses the following issues: the manner in which the domain name(s) is not/are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights why the Respondent (domain-name holder) should be considered as having rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and why the domain name(s) should not be considered as having been registered or used in bad faith.
This Panel notes that the Response argues that the disputed domain name was not “registered or used in bad faith” as distinct from the test under the Policy that the disputed domain name must be shown to have been both “registered and used in bad faith”.
In the circumstances this Panel finds that the Complaint was properly founded on the UDRP Policy, that the Response is incorrect in stating otherwise and furthermore notwithstanding the incorrect references to the usTLD policy this Panel admits and fully takes into consideration the Response as filed for the purposes of this Complaint.
Complainant has furnished ample evidence of its ownership of the SPIBELT trademark acquired through its portfolio of trademark registrations listed above and its extensive international goodwill acquired by its use of the SPIBELT trademark in connection with the sale of belts and other accessories in the USA and other jurisdictions including over the Internet.
Complainant has argued that the disputed domain name is confusingly similar to Complainant’s mark. For the purpose of comparison under the Policy the “.net” gTLD extension may be ignored therefore this Panel finds that the disputed domain name <spibelt.net> is identical to Complainant’s SPIBELT trademark.
In the circumstances Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interest in the disputed domain name arguing that the disputed domain name is identical to its SPIBELT trademark, that Respondent is not commonly known by the name SPIBELT, that Complainant has not granted any permission to Respondent to use its SPIBELT trademark.
Respondent has provided a very brief Response, essentially claiming a right to ownership of the disputed domain name because the disputed domain name was available for registration when it was registered.
Furthermore Respondent states that he is willing to assign the domain name registration to Complainant for USD $5,000. Respondent gives no reason as to why he requests this particular sum of money and in the view of this Panel such an offer is indicative of the fact that Respondent has no legitimate interest in the disputed domain name.
In the circumstances this Panel finds that Respondent has no rights in the disputed domain name and Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
The disputed domain name was registered by Respondent on November 17, 2010. At the date of registration of the disputed domain name, Complainant was already a successful company with a growing reputation using the SPIBELT and the more descriptive SPIBELT SMALL PERSONAL ITEM BELT marks since 2007. Complainant also had an established web presence with its website to which its <spibelt.com> domain names resolved.
Respondent chose and registered the disputed domain name <spibelt.net> which is identical to Complainant’s distinctive SPIBELT trademark. Given the distinctive character of the SPIBELT mark, it is improbable that Respondent was not aware of Complainant, its reputation and its website at <spibelt.com> when he registered the disputed domain name. In the absence of any explanation to the contrary, on the balance of probabilities, it is most probable that the disputed domain name <spibelt.net> was chosen and registered in order to take predatory advantage of Complainant’s growing reputation and goodwill in the SPIBELT mark. Furthermore, on his own express admission in the Response, Respondent admits that he registered the disputed domain name with the intent to sell it and has offered to sell the disputed domain name for USD $5,000.
Respondent has caused, permitted or allowed the disputed domain name to resolve to a website maintained by a competitor of Complainant. In the view of this Panel, in the absence of any explanation, this is evidence of bad faith use of the disputed domain name. Despite the suggestions made by Complainant, here is no evidence that the competitor has conspired or acquiesced in any way in such an arrangement. Complainant has suggested that the domain name may have been registered by the competitor and that the competitor may have shielded its true identity from the public by identifying itself as Respondent. There is no evidence to support this suggestion and in the view of this Panel it is most inappropriate for Complainant to make such a suggestion without any supporting evidence.
On the evidence before this Panel, there are circumstances indicating that Respondent registered the disputed domain name primarily for the purpose of selling the domain name registration to Complainant who is the owner of the identical trademark for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name. Furthermore this Panel finds on the balance of probabilities that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the online location.
Complainant has therefore also satisfied the third and final element in the test in Policy ¶ 4(a)(iii) and is entitled to succeed in this Complaint.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spibelt.net> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
James Bridgeman Panelist
Dated: 29 November 2011
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